Moot Court: Trademark Protection on Trial

Jeffery Rohrs from Optiem discusses how this is going to work. This will not be a true "moot court" argument, not arguing a specific fact pattern, rather they will debate the general issues that are popular, and this is for non lawyers and lawyers. The people on the panel are "role playing" and does not mean they believe in what they are saying, they can be playing devils advocate. Scott Schwartz will be making the case for the trademark owners. Deborah Wilcox will be making the case for the search engines. Danny Sullivan, Barry Felder (playboy vs. netscape case), Eric Goldman (epinions counsel) will be on the board. Jeff will be the moderator.

He briefly describes trademark and what is it. A word, name, symbol, color, scent or sound used in commerce to distinguish good or services. Stronger marks might get stronger protection. Arbitrary marks like Google, Pepsi, RustyBrick all get stronger protection then would a generic word. Trademark law protects against "confusion" and "dilution." I did a review on this at the NY conference, do a search on trademark at this site and you can read more about the legalese of trademark and search. To see Google's current trademark policy visit google.com/tm_complaint.html, it says that in the US you can not have trademarks in the copy of the ad but you can bid on it (outside US it differs). Overture has a policy as well, trademarks can be used for several fair use reasons, read their policy (URL too long to type). And here we go.

Scott Schwartz begins represents the case for the trademark owners. TM owners spend enormous amounts of money establishing, promoting them. Search engines make a lot of money selling them. He then showed some obvious examples of trademark issues on tangible items. So why is this ok on Google? You type in "Klennex" in Google, and the sponsored results have non-Klennex company pages. TMs being sold in paid search is causing consumer confusion and having a negative effect on TM owners. Do a search for elmopalooza, you see an ad to sing up your kids for talent agencies. Search on dunkin Donuts, in the sponsored links you see franchise opportunities.com available to click on, are they part of dunkin Donuts? I am confused, and that is the test for trademark confusion.

Barry Feldman jumped in and asked Scott a question: He asked if he put up a brand named "new sauce" and put it in the same isle as ragu, would that violate TM? Scott said absolutely not, because on search, someone is searching on "ragu" not on "sauce".
Eric Goldman asked for the difference between online and offline, in terms of not being able to visually see the package.
After more probing by Barry and Danny, Scott said that the language used by search engines "Sponsored" it kind of means that dunkin Donuts is sponsoring these results.
Then as he began to conclude with this concept, Eric asks an other question by asking about the elmopalooza case, the sole case is to ride the elmo brand to find new talented kids.

Scott says its the SEs responsibility, and they need to change things. They profit from it and they bare the responsibility for it. They need to change the visibility of these ads, call them "paid" and not "sponsored". They should alert the trademark owners when their trademarks are being purchased. Advertisers must say they are not infringing, advertisers need to provide accurate contact information, and require buyers to indemnify search engines.

Deborah is representing the search engines, she starts off saying where is the trademark problem, where is the confusion? (1) There must be some kind of use of the trademarks. Use in the legal sense, you must have some type of branding going on. The search engines are using the trademarks to brand their engines nor are the advertisers using it to boost their brand of their brands. (2) Where is the confusion? TM law is meant to protect the consumers, it is not misleading the consumer's purchase decision. If there is no confusion then where it the problem. Sponsored links do not confuse the user, they are clearly separated on in Google, Overture and Yahoo. This is in compliance with what the FTC requires. (3) The searcher's objective is not know when they search. The searcher might not be looking for the "official site". They might want to learn about reviews, competition, and more. So I might type in a product name to look for reviews.

About 5 minutes of questions by the board were thrown in to Deborah, all which were handled well. Hard to cover this because there is very little structure to the presentation, it was meant to be in this fashion. But it was a great presentation.

Now they each have five minutes of rebuttal.

Scott said search engines are literally nickel and dimeing the trademark owners to death (people clapped). He shows more example of confusion. He said he would like to see the search results on a different page. That made everyone laugh.

Deborah offers her rebuttal, she says that this is not illegal. People always use others brands to boost their own brands legally. Is Network Solutions held accountable when someone buys your trademark name? No but the person who buys it is.

The board walks out for 10 minutes to discuss, we can ask for councils questions.

The board now comes back in and they each speak.

Barry Feldman is up first. He said a balance approach is appropriate. Was there confusion? There are things the SEs can do to help make sure this does not happen. The visuals are important to help reduce the confusion.

Danny said that he dislikes that people can buy other people's brands but its not illegal. He would like to see the sponsored listing label to change to "paid advertisement." In the end, the beef is with the advertisers not the search engines.

Eric Goldman said we need to separate our emotional response and the legal response. He agrees that the beef is with the advertisers. Plus there needs to be confusion with the ad, plus the landing page.

That is all. We had some Q & A but most were like, look at my example.